The mission and the place of a patent attorney in the intellectual property protection
According to Paragraph 3 of Article 1247 of the Civil Code of the Russian Federation and Paragraph 1 ofArticle 2 of Federal Law of the Russian Federation of 30.12.2008 No. 316-FZ, a patent attorney is acitizen of the Russian Federation, who, in accordance with the established procedure, has received arelevant status and who carries out his activities related to the legal protection and the defence of theintellectual rights, including the acquisition and disposal of these rights. 1According to the Rospatent information, more than 1,900 people have been registered in the Register ofPatent Attorneys of Russian Federation by the beginning of 2018. However, as it is indicated in theinformation report about 1,500 people work actually. 2 According to the statistical reports, the number ofcertified specialists increases annually, but if you compare the number of such specialists, for example,with Germany, where about 3,800 patent attorneys are registered, the figures are very modest. 3 At thesame time, the importance and demand for patent attorneys is obvious.The powers of a patent attorney for the protection of the intellectual rightsDescribing the patent attorney’s powers, it is not by chance that the legislator has highlighted thepossibility of participating in the protection and defence of the rights of the holder of the intellectualproperty subject matters. Thus, the term “protection” means the use and application of the measuresstipulated by law for the suppression of offenses, the recognition and restoration of the rights, as well asthe application of the appropriate sanctions.In accordance with Paragraph 1 of Article 4 of the Law “On Patent Attorneys” the patent attorney shallhave the right to provide the following services for the protection of the rights to the client.· To advise on the protection of the intellectual rights.· To interact with the Federal Executive Authority on Intellectual Property and the Chamber for PatentDisputes, including to correspond, to prepare and submit objections to the examination decisions andother documents, to participate in various meetings and sessions.· To participate as an examiner or a representative in the court in cases involving the rights to theintellectual property subject matters.· To implement other patent attorney activities not prohibited by the legislation of the Russian Federationin the interests of the client.Advising on the protection of the intellectual rightsOne of the requirements to the person claiming the status of a patent attorney is the requirement to haveexperience in the relevant specialization during at least four years. Thus, addressing to a certified patentattorney for an advice, the right holder can be sure that he will receive a qualified advice and the usefulinformation regarding the ways and opportunities for the protection of the rights and the legitimateinterests.The interaction with Rospatent and the Chamber for Patent DisputesThere are often the situations, when the applicant does not agree with the decision of Rospatent withrespect to the application filed, or the owner of the registered subject matter of intellectual property
1 The Federal Law of December 30, 2008 No. 316-FZ “On Patent Attorneys”2 The Rospatent report on the number of the patent attorneys in the regions of the Russian Federation for 2017 – URL:https://rupto.ru/ru/activities/pat_pov/sved-pat-pov3 Horoshkeev V. A. Who about what, but the patent attorneys about their law // Patent Attorney – 2018 – No. 3 – URL:http://www.patentinfo.ru/issue/3p_18.html
considers granting legal protection to another subject matter to be illegal. In such cases, the use of apatent attorney as a representative in the Chamber for Patent Disputes will be the most correct decision.The patent attorney, being the person who constantly interacts with the Federal Executive Authority andensures the correct and timely filing the documents required for the registration, will be able to composecorrectly an objection, as well as to assess correctly the expediency of addressing to the Chamber forPatent Disputes.The participation in the court proceedingsThe patent attorney can act as an examiner or he can be a representative in the court in the cases involvingthe intellectual rights.The examination shall be appointed by the court in the cases, where it is necessary to establish the factsrequiring the special knowledge. The patent attorney, depending on his qualification, has the right to holda patent and technical examination, to study the issue of similarity of the designations in the event of adispute with respect to the trademarks or to analyze the products with respect to which the means ofindividualization have been registered as to their homogeneity. The examiner’s conclusion shall berecognized as evidence, along with and on an equal basis with other evidence. But because of the specificknowledge of the person, who has conducted the examination, the court, when making a decision, pays anincreased attention to such conclusions.The right of the patent attorney to participate as a representative on the client's behalf during the courtproceedings shall be certified by the power of attorney that does not require notarization. The advantagesof such representation consist in understanding the essence and the specifics of the dispute arising fromthe peculiarities of the field of the intellectual property. At the same time, it should be noted that thestatus of a patent attorney does not exclude the possibility of a person to have simultaneously a lawyerstatus. 4 For this reason, some subjects are patent attorneys and simultaneously they have a lawyer status.Other activities on the protection of the rights of the holder of the intellectual property subjectmatterUnder the norms of the Federal Law “On Patent Attorneys” the range of actions of the patent attorney inthis case shall be limited to the actions that do not contradict to the legislation. Such activities include, forexample, writing and sending the letters of claim to the person who is offending the rights of the person,who is represented by the patent attorneys.The mission and the place of a patent attorney in the intellectual property protectionThe clear arguments can be given to justify the use of the services of a patent attorney for the protectionof the intellectual property rights. The patent attorney is a professional intermediary between the rightholder of the intellectual property subject matter and the state authorities (the Federal ExecutiveAuthority, the judicial instances, etc.). The status of a patent attorney confirms the existence of therelevant exprience and the qualification knowledge. The legislation reflects the obligation of the patentattorney to represent the interests of the customer in a proper manner and in accordance with theprofessional ethics. In the event of damage, the sanctions can be applied to the patent attorney.Describing the role and the mission of the patent attorneys in protecting the legitimate interests of theright holders of the intellectual property and the means of individualization, it can be said with confidencethat their essence is in a professional representation and qualified assistance to the client in ensuring andrestoring the rights owned by him.
Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney